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Chapter 2100 Flashcards

1
Q

2103

A

Patent Examination Process

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2
Q

2104

A

Requirements of 35 U.S.C. 101

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3
Q

2105

A

Patent Eligible Subject Matter — Living Subject Matter

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4
Q

2106

A

Patent Subject Matter Eligibility

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5
Q

2106.03

A

Eligibility Step 1: The Four Categories of Statutory Subject Matter

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6
Q

2106.05

A

Eligibility Step 2B: Whether a Claim Amounts to Significantly More

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7
Q

2106.06

A

Streamlined Analysis

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8
Q

2106.07

A

Formulating and Supporting Rejections For Lack Of Subject Matter Eligibility

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9
Q

2107

A

Guidelines for Examination of Applications for Compliance with the Utility Requirement

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10
Q

2109

A

Inventorship

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11
Q

2111

A

Claim Interpretation; Broadest Reasonable Interpretation

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12
Q

2112

A

Requirements of Rejection Based on Inherency; Burden of Proof

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13
Q

2114

A

Apparatus and Article Claims — Functional Language

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14
Q

2115

A

Material or Article Worked Upon by Apparatus

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15
Q

2116

A

Novel, Nonobvious Starting Material or End Product

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16
Q

2117

A

Markush Claims

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17
Q

2120

A

Rejection on Prior Art

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18
Q

2120.01

A

Rejections Under 35 U.S.C. 102(a)(1) and (a)(2) and Pre-AIA 35 U.S.C. 102(a), (b), or (e): Printed Publication or Patent

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19
Q

2120.02

A

Rejections Under 35 U.S.C. 102(a)(1) or Pre-AIA 35 U.S.C. 102(a) or (b): Knowledge by Others, or Public Use, or On Sale

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20
Q

2121

A

Prior Art; General Level of Operability Required to Make a Prima Facie Case

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21
Q

2122

A

Discussion of Utility in the Prior Art

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22
Q

2123

A

Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments

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23
Q

2124

A

Exception to the Rule That the Reference Must be Prior Art

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24
Q

2125

A

Drawings as Prior Art

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25
2126
Availability of a Document as a “Patent” for Purposes of Rejection Under 35 U.S.C. 102(a) or Pre-AIA 35 U.S.C. 102(a), (b), and (d)
26
2127
Domestic and Foreign Patent Applications as Prior Art
27
2128
“Printed Publications” as Prior Art
28
2129
Admissions as Prior Art
29
2131
Anticipation — Application of 35 U.S.C. 102
30
2132
Pre-AIA 35 U.S.C. 102(a)
31
2133
Pre-AIA 35 U.S.C. 102(b)
32
2134
Pre-AIA 35 U.S.C. 102(c)
33
2135
Pre-AIA 35 U.S.C. 102(d)
34
2136
Pre-AIA 35 U.S.C. 102(e)
35
2137
Pre-AIA 35 U.S.C. 102(f)
36
2138
Pre-AIA 35 U.S.C. 102(g)
37
2139
Rejections Under Pre-AIA 35 U.S.C. 102
38
2141
Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103
39
2141.01
Scope and Content of the Prior Art
40
2141.01(a)
Analogous and Nonanalogous Art
41
2141.02
Differences Between Prior Art and Claimed Invention
42
2141.03
Level of Ordinary Skill in the Art
43
2142
Legal Concept of Prima Facie Obviousness
44
2143
Examples of Basic Requirements of a Prima Facie Case of Obviousness
45
2144
Supporting a Rejection Under 35 U.S.C. 103
46
2145
Consideration of Applicant’s Rebuttal Arguments and Evidence
47
2146
Pre-AIA 35 U.S.C. 103(c)
48
2147
Biotechnology Process Applications; Pre-AIA 35 U.S.C. 103(b)
49
2148
Form Paragraphs for Use in Rejections Under Pre-AIA 35 U.S.C. 103
50
2150
Examination Guidelines for 35 U.S.C. 102 and 103 as Amended by the First Inventor To File Provisions of the Leahy-Smith America Invents Act
51
2151
Overview of the Changes to 35 U.S.C. 102 and 103 in the AIA
52
2152
Detailed Discussion of AIA 35 U.S.C. 102(a) and (b)
53
2153
Prior Art Exceptions Under 35 U.S.C. 102(b)(1) to AIA 35 U.S.C. 102(a)(1)
54
2154
Provisions Pertaining to Subject Matter in a U.S. Patent or Application Effectively Filed Before the Effective Filing Date of the Claimed Invention
55
2155
Use of Affidavits or Declarations Under 37 CFR 1.130 To Overcome Prior Art Rejections
56
2156
Joint Research Agreements
57
2157
Improper Naming of Inventors
58
2158
AIA 35 U.S.C. 103
59
2159
Applicability Date Provisions and Determining Whether an Application Is Subject to the First Inventor To File Provisions of the AIA
60
2161
Three Separate Requirements for Specification Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph
61
2162
Policy Underlying 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph
62
2163
Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, first paragraph, “Written Description” Requirement
63
2164
The Enablement Requirement
64
2165
The Best Mode Requirement
65
2166
Rejections Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph
66
2171
Two Separate Requirements for Claims Under 35 U.S.C. 112 (b) or Pre-AIA 35 U.S.C. 112, Second Paragraph
67
2172
Subject Matter Which the Inventor or a Joint Inventor Regards as The Invention
68
2173
Claims Must Particularly Point Out and Distinctly Claim the Invention
69
2174
Relationship Between the Requirements of 35 U.S.C. 112(a) and (b) or Pre-AIA 35 U.S.C. 112, First and Second Paragraphs
70
2175
Form Paragraphs for Use in Rejections Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph
71
2181
Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation
72
2182
Search and Identification of the Prior Art
73
2183
Making a Prima Facie Case of Equivalence
74
2184
Determining Whether an Applicant Has Met the Burden of Proving Nonequivalence After a Prima Facie Case Is Made
75
2185
Related Issues Under 35 U.S.C. 112(a) or (b) and Pre-AIA 35 U.S.C. 112, First or Second Paragraphs
76
2186
Relationship to the Doctrine of Equivalents
77
2187
Form Paragraphs for Use Relating to 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph
78
2190
Prosecution Laches and Res Judicata

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